60 F. 392 | U.S. Circuit Court for the District of Eastern Pennsylvania | 1894
Tbe complainants, claiming to be assignees and present owners of letters patent No. 252,721, issued to Horace Koecblin on February 14, 1882, for “manufacture of colors or dyestuffs,” filed tbeir bill charging tbe defendants with infringe•ment thereof. Tbe latter, by tbeir answer, have set up several defenses, including a denial of tbe infringement alleged. Tbe case thus presented has been beard and considered upon tbe pleadings and proofs, and is now for decision.
He who conceives a new method, and by that method produces a new substance, invents, by one and tbe same exercise of the creative faculty, both a process and a product. Tbe exploit is single, though tbe achievement is double. The manner of producing and the thing produced may, of course, be separately contemplated, but tbe inventive act from which both are derived is not divisible. Tbe fruit is twofold, but tbe germ is one. This seems to me to be self-evident; but, were demonstration required, it would be found in tbe characteristically vigorous and lucid opinion of Judge Greer in tbe case of Goodyear v. Railroad Co., 1 Fish. Pat. Cas. 626, Fed. Cas. No. 5,563. But from this unquestioned premise a conclusion was reached in
I turn now to the act of 1870, under which the patent in suit was granted. It is, as to the subject under consideration, markedly different from the act of 1836. It mentions the specification and the claim as two distinct things, and requires an inventor, not merely to specify and point out, but to “particularly point out and distinctly claim,” his invention. The change in words is very slight, but the difference in meaning is obvious and important. By the one act he was instructed to specify what he alleged to be his invention; by :the.other he is told that the invention for which he desires a patent he must distinctly claim. The fact that, except as to the change just indicated, the words used in the two acts, when dealing with this matter, are substantially identical, is quite convincing that the 'draughtsman of the act of 1870, actually as .well as in presumption of law, thus peculiarly varied the language of the act of 1836, not 'without reason, but with a definite purpose. Nor is the legislative design hard to discern. The practice of the profession, and the opinions of the judges to which I have adverted, had suggested that the embarrassments attendant upon the efforts of the courts to construe
From these preliminary observations I now pass to the consideration of the only claim of the patent involved, which claim is as follows “I claim the improvement in the manufacture of coloring matters, consisting in the production of violet coloring matters by the action of nitroso derivatives of the tertiary amines on tannin, or equivalent reaction, substantially as described.” Is this claim for a process, or for a product, or for both? It is true that the word “manufacture” may be used to denote either the act of manufacturing or a manufactured article, and that the word “production” may designate as well a, thing produced as the operation of producing. Each of these words does possess the double sense which the complainants ascribe to it; and, if any Insurmountable difficulty in comprehending the claim resulted from this, the consequence, perhaps, might be that the patent would fall for want of any distinct claim to support it. But these words, when properly related to their context, do not render the claim equivocal. The improvement is expressly stated to be “in the manufacture of coloring matters,” — that is to say, in making coloring matters; for otherwise it would be necessary to suppose that (at this point) it was intended to claim the substances called “coloring matters,” which would be absurd. Then, the claim, continuing, explains that the referred-to improvement in manufacture of coloring matters consists in — what? In a substance; in a fabric; in an article of merchandise? Xo; but “in the production of violet coloring matters.” I do not think it possible than any person having, the least degree of skill in the use of the English language would so have expressed himself if his intention had been to
It remains only to notice the contention that in this instance the product inheres in the process, and that, therefore, the. claim of the one necessarily includes the other. For reasons already stated, this position is untenable. Product and process are quite distinct matters, even where both are created by the same inventive act. If the point here was the same as in Goodyear v. Railroad Co., it might be decided favorably to the complainants; but as, in this case, the question is not as to the scope of the invention, but as to the subject-matter of the patent as defined by the claim, it must be determined against them. It was not held in Goodyear v. Railroad Co. that, because the process was expressly claimed, the product was constructively claimed. The theory upon which the judpient was founded is quite different. It is that, though not at all included in the claim, product was patented, because it appeared, from other parts of the instrument, to have been invented. In other words, the scope of the patent was determined, not by construction of the
I have reached the conclusion that the only claim of the patent in suit is for a process, and is not for a product; and, waiving any question as to whether use or sale of the product by the defendants jointly has been shown, it has at least not been established that the® have in any manner used the process. It results from this that the charge of infringement has not been sustained. Other defenses were interposed, and the points which they involve have been very thoroughly and ably argued; but it is unnecessary, and therefore not desirable, that I should intimate any opinion upon them. I do not do so; but upon the ground, and for the reasons, which have been stated, the bill is dismissed, with costs.